This article has been written by Vikash Dhaka, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

As we all know, we tend to relax by watching various content on television, theatres, or any OTT platforms. Whenever we want to make yourself-stress-free, we always look forward to the movies whether it is in the theatres or at home. It is quite natural for us to be amused by the title of the film. 

Whenever we want to watch any movie, we generally consider two things, the first one is the cast of the movie and the second is the movie title. If the movie title is catchy, the audience will be more inclined to watch the same. The producer and creative team of any film try their best to choose the fascinating title of the film. They spend a lot of money and time choosing the title of the film. Indeed, there is no doubt that movie titles are an integral part of any movie. Dhoom is a Bollywood movie produced by Aditya Chopra under the banner of Yash Raj Films. The first series i.e. ‘Dhoom’ which released in 2004 and had cracked many box-offices records. 

The second franchise of the film came in 2006 and earned a humongous worldwide collection. Further, the third franchise came in 2013, which became one of the highest-grossing Indian films of all times. In this article, I will discuss the rights over the movie title ‘Dhoom’ and the trademark registration of the movie title ‘Dhoom’.

Are movie titles copyrightable?

If we look at the Copyright Act, it protects literary work, musical work, artistic work, sound recording, cinematograph film, etc. under Section 13 and 14 of the Copyright Act. To be more specific, the script, music and lyrics of a film are protected under the Copyright Act. It is quite natural for every one of us to believe that the movie title will be protected under copyright. But, it is not true. 

The titles of the film are not protected under the Copyright Act. There are many cases where the court explicitly mentions that the title of the film does not even come under the category of the work as for protection against the infringement, there should be a work whether it is literary or musical, etc. One such case is Krishika Lulla and Ors. vs. Shyam Vithalrao Devkatta and Arr, where the honourable Supreme Court held that the film titles are not protected under the copyright law. So, we can’t register the movie title ‘Dhoom’ under the Copyright Act.

Movie titles under trademark

There are 45 classes as mentioned in the Trademark Rule, 2002 which talks about goods and services. From Class 1 to Class 34, the goods are discussed under the Trademark Rule, and from Class 35 to 45, services are mentioned in the Rules. Class 41 talks about the entertainment service under the Trademark Rules. Entertainment services include production of the film, radio entertainment, production of the music, etc. It has become an industrial practice to register the name of the film i.e. the title of the movie under Class 41. 

As per Section 29(1) of the Trademark Act, 1999, deceptive and similar words should create confusion regarding the source of the mark or work for claiming the infringement of the Trademark. To register a movie title under trademark, the movie title should not be generic, it should be distinct, there should not be any conflict with other movie titles.

In the case of Warner Bros. Entertainment vs. Harinder Kohli and Ors., the Delhi High Court held that the movie title ‘Harri Puttar’ and ‘Harry Potter’ are somewhat similar but the audience will not be confused by their names as the audience of Harry Potter are the educated, whereas the audience of Harri Puttar is illiterate. So, the honourable court rejected the opposition application.

Registration of movie titles can be for a single movie or a franchise. For example, a single movie title is the ‘Queen’ and the franchise of a Movie title is Dhoom Series, Golmaal Series, etc.

In the case Kanungo Media Ltd. vs. RGV Film Factory and Ors., the honourable court held that there are two categories for the registration of movie titles. The first one is the registration of the movie title of the series or franchise of the movie and the second one is the registration of the movie title for a single movie. 

To know more about the registration of dhoom series please visit 

As for the movie title for franchising movies, it enjoys the popularity and set of the audience looking for its series. So, a series of movies enjoy trademark protection over their title. But when it comes to the movie title of a single movie, the respective applicant has to prove that the movie title has a secondary meaning. The honourable court has given certain parameters for any movie title qualifying for secondary meaning. These parameters depend on the use of the title, promotion, marketing of the title, box office collection, how the public relates with the titles, the popularity, the fame associated with the title of the film, etc. 

There are many instances where the movie title wasn’t registered under Class 41 of the Trademark Rule, 2002. However, the court has acknowledged the movie title as property of the owner. One such example is the Film ‘Sholay’. The producer did not register the title but due to its popularity, the title is protected. In the case of Sholay Media and Entertainment vs Parag Sanghavi and Ors, the court ordered Ram Gopal Verma to change the name of the film titled ‘Ram Gopal Verma Ki Sholay’, on the basis of the popularity of the film ‘Sholay’. However, he changed the title as ‘Ram Gopal Verma Ki Aag’. 

If we look at the present industrial practice, the production houses tend to register their movie titles. For example, 3 Idiots, Padman, etc. are registered trademarks. 

Similarly, for a franchise of the movie, the movie titles are registered by the respected applicant under Class 41. If the production house wishes to create merchandise products, they can register the product under the relevant class of the Trademark Rules. For example, the merchandising products of the Dhoom series are clothing, footwear, etc. which are registered under Class 25.

Registration of film titles at associations

The producers, studios, and production houses registered their film titles at various associations such as the Indian Motion Pictures Producers Association (IMPPA), Western India Film Producers’ Association (WIFPA), and Indian Film and Television Producers Council (IFTPC). 

Once a film title is registered with these associations, the same title can’t be registered by other parties. However, there is no legal protection given to the owner of the film title who registered with these associations. Association doesn’t have the power to restrain others from using the same film title which is already registered with them. In the case of Anil Kapoor Film Company Private Limited vs. Make My day Entertainments, there arose the conflict between the movie title ‘Veere Ki Wedding’ and another movie with the title ‘Veere Di Wedding’ which was already registered with IFTPC. The court held that there is a different cast in both the movies which doesn’t mean the defendant tries to pass off their film as made by the Plaintiff. Eventually, the case was resolved.

Conclusion

It is quite evident that the name or title of the film plays an important role in the entertainment industry. People tend to associate the story or screenplay of the movie with the movie title itself. 

Even the producer and their team spend a lot of time and money to find a catchy and enticing name for the film. Producers or studios tend to register the film titles under the trademark registry to preserve their commercial rights associated with the title. Once the film becomes successful at the box office, the IP value associated with the film title grows exponentially. The producer gives the merchandising rights to other brands based on the title of the film.

We know that movie titles can’t be protected under the Copyright Act. There is no provision given in the Act to protect the same. However, if we look at the Trademark Rules, particularly at Class 41, which talks about the entertainment industry, the producer or the studios can register their movie titles under this head. However, it is quite a smooth process to register the titles of film series as compared to a single movie title. For registering a single movie title, the respected applicant has to prove or show that there exists a secondary meaning associated with the title. 

References

1. https://www.bananaip.com/
2. https://blog.ipleaders.in/
3. https://corporate.cyrilamarchandblogs.com/
4. https://www.mondaq.com/
5. https://indiankanoon.org/

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